Match Group, LLC v. Bumble Trading Inc.

Western District of Texas, txwd-6:2018-cv-00080

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2 EXHIBIT 4 Case TriPlay, Inc. 6:18-cv-00080-ADA-JCM v. WhatsApp Inc., Slip Copy (2018) Document 34-4 Filed 11/08/18 Page 2 of 12 2018 WL 1479027 motion. WhatsApp objected to the Report (D.I. 147) ("Objections"), to which TriPlay responded (D.I. 150) KeyCite Blue Flag – Appeal Notification ("Response"), and the Court heard oral argument on Appeal Filed by TRIPLAY, INC. v. WHATSAPP, INC., Fed.Cir., February 26, 2018 (see D.I. 155) ("Tr."). The Court will August 17, 2018 sustain WhatsApp's objections and grant its motion to 2018 WL 1479027 dismiss. Only the Westlaw citation is currently available. United States District Court, D. Delaware. I. BACKGROUND TRIPLAY, INC. and TriPlay, Ltd., Plaintiffs, In a previous Order, the Court adopted Judge Burke's v. earlier recommendation and concluded that claim 12 of WHATSAPP INC., Defendant. the '475 patent was not eligible for patenting. At the same time, the Court deferred ruling on the patentabilty C.A. No. 13–1703–LPS–CJB of claim 1 of the '475 patent, as well as other claims, | concluding that claim construction was necessary before Signed 03/27/2018 the parties' dispute could be resolved. (See D.I. 52 (Report Attorneys and Law Firms and Recommendation); D.I. 72 (Order)) Gregory E. Stuhlman, GREENBERG TRAURIG, LLP, There two patents-in-suit share an identical specification. Wilmington, DE, Michael A. Nicodema, Douglas R. Both relate to cross-platform messaging between two Weider, Jason H. Kislin, GREENBERG TRAURIG, devices that do not share compatible media/messaging LLP, Florham Park, NJ, Attorneys for Plaintiffs TriPlay, capabilities. '475 patent at 1:5–6; '677 patent at 1:5– Inc. and TriPlay, Ltd. 6. The patents describe converting an initial message into a format and/or layout that is compatible with the Jack B. Blumenfeld, Rodger D. Smith II, MORRIS, destination device. '475 patent at 5:22–26, 16:51–65, 17:6– NICHOLS, ARSHT & TUNNELL LLP, Wilmington, 8. The '677 patent differs from the '475 patent by claiming DE, Douglas E. Lumish, Richard G. Frenkel, Yasamin the scenario in which the initial message includes a video— Parsafar, LATHAM & WATKINS LLP, Menlo Park, in that case, the video is converted into a "clickable link" CA, Gabriel K. Bell, LATHAM & WATKINS LLP, for non-compatible devices. '677 patent at 23:23–51. Washington, D.C., Attorneys for Defendant WhatsApp Inc. The parties agree that the representative claims are claims 1 and 8 of the '475 patent and claims 15 and 9 of the '677 patent. (See Report at 11 n.8) These claims are reproduced MEMORANDUM OPINION below. STARK, U.S. District Judge Claim 1 of the '475 patent recites: *1 Plaintiffs TriPlay, Inc. and TriPlay, Ltd. ("Plaintiffs" A system for message communication via a or "TriPlay") assert, in the operative Third Amended communication media between one or more originating Complaint ("TAC"), that Defendant WhatsApp Inc. communication devices assigned to a sender and one or ("Defendant" or "WhatsApp") infringes TriPlay's U.S. more destination communication devices assigned to a Patent Nos. 8,332,475 (the "'475 patent") and 8,874,677 receiver, the system comprising: (the "'677 patent"), both entitled "Messaging System and Method." (D.I. 80) WhatsApp has filed a motion a) an access block configured to receive, directly to dismiss, pursuant to Federal Rule of Civil Procedure or indirectly, from at least one originating 12(b)(6), on the grounds that the patents-in-suit fail to communication device a message having initial claim patent eligible subject matter under 35 U.S.C. § 101. characteristics comprising, at least message format (D.I. 120) In a 45–page Report and Recommendation (the and an initial message layout, and to transmit the "Report") (D.I. 145), issued on November 20, 2017, Judge message to at least one destination communication Burke recommended that the Court deny WhatsApp's device; © 2018 Thomson Reuters. No claim to original U.S. Government Works. 1 Case TriPlay, Inc. 6:18-cv-00080-ADA-JCM v. WhatsApp Inc., Slip Copy (2018) Document 34-4 Filed 11/08/18 Page 3 of 12 2018 WL 1479027 as a criterion for selecting and converting the message b) a media block operatively coupled to said access format. block and configured to select, before transmitting, at least one message format and a message layout Claim 15 of the '677 patent depends from claim 6. Claims for each of the at least one message formats fitting 6 and 15 recite: to each of said at least one destination device, and to then convert at least said initial message layout 6. A messaging system comprising an access block to the selected message layouts, said selection and operatively coupled to a media block, wherein: conversion being done in accordance with at least one criterion selected from a group comprising: the access block is configured to receive an initial message sent by an originating communication device *2 i) criterion related to message communication to a destination communication device, the initial capabilities of the destination communication message being characterized, at least, by message device with regard to message communication format, an initial message layout, and data indicative capabilities of the originating communication of at least one receiver associated with the initial device; message, wherein the initial message includes a video; ii) criterion related to message displaying the media block is configured to obtain data capabilities of the destination communication indicative of displaying capabilities of the destination device with regard to message communication communication device and enable conversion, in capabilities of the originating communication accordance with a criterion related to the displaying device; and capabilities of the destination communication device, of the initial message into an adapted message, iii) criterion related to the communication media. wherein the conversion comprises: Claim 8 of the '475 patent depends from claim 7, which a) providing, by the media block, a clickable icon: depends from claim 6, which depends from claim 1. Therefore, claims 6–8 are recited below: i) based on the video from the initial message and 6. The system of claim 1 configured to receive a message ii) clickable into an adapted version of the video, having a layout based on a template, said template wherein the adapted version of the video is adapted characterized by at least a unique identifier, wherein to the displaying capabilities of the destination the system is further configured to recognize the communication device, and unique identifier of the template, and the media block b) determining, by the media block, an adapted is further configured to select, before transmitting, message layout, comprising the clickable icon; and at least one message format and a message layout for each of the at least one message formats fitting the access block is further configured to enable to each of said at least one destination device, transmitting the adapted message to the destination and then convert the initial layout of the message communication device associated with the at least to the selected message layouts, said selection and one receiver. conversion being done in accordance with at least one predefined layout corresponding to the recognized 15. The system of claim 6, wherein the media block unique identifier and the displaying capabilities of the is configured to convert the initial message into destination communication device. the adapted message, and wherein the clickable icon is adapted to the displaying capabilities of the 7. The system of claim 6 wherein the template is selected destination device. from a group comprising initial interactive message and replying interactive message. *3 Finally, claim 9 of the '677 patent depends from claim 8, which depends from claim 6 (recited above). Claims 8 8. The system of claim 7 wherein the unique identifier and 9 are reproduced below: corresponding to at least one message is considered © 2018 Thomson Reuters. No claim to original U.S. Government Works. 2 Case TriPlay, Inc. 6:18-cv-00080-ADA-JCM v. WhatsApp Inc., Slip Copy (2018) Document 34-4 Filed 11/08/18 Page 4 of 12 2018 WL 1479027 complaint are true (even if doubtful in fact).' " Victaulic 8. The system of claim 6, wherein the initial message Co. v. Tieman, 499 F.3d 227, 234 (3d Cir. 2007) (quoting is characterized by the initial message layout based Twombly, 550 U.S. at 555). A claim is facially plausible on a template, the template being characterized by, "when the plaintiff pleads factual content that allows the at least, a unique template identifier; and wherein court to draw the reasonable inference that the defendant the media block is further configured to provide is liable for the misconduct alleged." Iqbal, 556 U.S. at the adapted message layout in accordance with the 678. At bottom, "[t]he complaint must state enough facts unique template identifier. to raise a reasonable expectation that discovery will reveal evidence of [each] necessary element" of a plaintiff's claim. 9. The system of claim 8 further comprising a data Wilkerson v. New Media Tech. Charter Sch. Inc., 522 structure associating at least the unique template F.3d 315, 321 (3d Cir. 2008) (internal quotation marks identifier with one or more predefined adapted omitted). message layouts, and wherein the media block is further configured to select the adapted message The Court is not obligated to accept as true "bald layout from among the predefined message layouts assertions,' " Morse v. Lower Merion Sch. Dist., 132 based, at least in part, on the unique template F.3d 902, 906 (3d Cir. 1997) (internal quotation marks identifier and the criterion related to the destination omitted), "unsupported conclusions and unwarranted communication device. inferences," Schuylkill Energy Res., Inc. v. Pa. Power & Light Co., 113 F.3d 405, 417 (3d Cir. 1997), or allegations II. LEGAL STANDARDS that are "self-evidently false," Nami v. Fauver, 82 F.3d 63, 69 (3d Cir. 1996). A. Rule 12(b)(6) Motion to Dismiss Evaluating a motion to dismiss under Federal Rule of Civil Procedure 12(b)(6) requires the Court to accept B. Review of Magistrate Judge's Report as true all material allegations of the complaint. See *4 As the pending motion to dismiss is a case-dispositive Spruill v. Gillis, 372 F.3d 218, 223 (3d Cir. 2004). "The motion, the Court has considered the parties' objections issue is not whether a plaintiff will ultimately prevail and responses de novo, see St. Clair Intellectual Prop. but whether the claimant is entitled to offer evidence Consultants, Inc. v. Matsushita Elec. Indus. Co., Ltd., 691 to support the claims." In re Burlington Coat Factory F. Supp. 2d 538, 541–42 (D. Del. 2010); 28 U.S.C. § 636(b) Sec. Litig., 114 F.3d 1410, 1420 (3d Cir. 1997) (internal (1); Fed. R. Civ. P. 72(b)(3). quotation marks omitted). Thus, the Court may grant such a motion to dismiss only if, after "accepting all well- pleaded allegations in the complaint as true, and viewing C. Patentable Subject Matter 1 them in the light most favorable to plaintiff, plaintiff is not 1 The parties provided multiple notices of supplemental entitled to relief." Maio v. Aetna, Inc., 221 F.3d 472, 481– authority based on recent § 101 decisions by the 82 (3d Cir. 2000) (internal quotation marks omitted). Federal Circuit. (See D.I. 141, 143, 154, 159) The Court is also aware of other recent § 101 A well-pleaded complaint must contain more than mere opinions. See, e.g., Exergen Corp. v. Kaz USA, labels and conclusions. See Ashcroft v. Iqbal, 556 U.S. 662, Inc., 2018 WL 1193529, *4 (Fed. Cir. Mar. 8, 2018) ("The district court's conclusion that these 678 (2009); Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555 claim elements were not well-understood, routine, (2007). A plaintiff must plead facts sufficient to show that and conventional is a question of fact to which we a claim has substantive plausibility. See Johnson v. City of must give clear error deference. Like indefiniteness, Shelby, 135 S. Ct. 346, 347 (2014). A complaint may not be enablement, or obviousness, whether a claim is dismissed, however, for imperfect statements of the legal directed to patentable subject matter is a question of theory supporting the claim asserted. See id. at 346. law based on underlying facts.... [N]ot every § 101 determination contains disputes over the underlying "To survive a motion to dismiss, a civil plaintiff must facts.") (internal citations omitted); Zuilli v. Google allege facts that 'raise a right to relief above the speculative LLC, 2018 WL 798666 (Fed. Cir. Feb. 9, 2018) level on the assumption that the allegations in the (affirming PTAB decision that claims were directed to patent-ineligible subject matter); Move, Inc. v. © 2018 Thomson Reuters. No claim to original U.S. Government Works. 3 Case TriPlay, Inc. 6:18-cv-00080-ADA-JCM v. WhatsApp Inc., Slip Copy (2018) Document 34-4 Filed 11/08/18 Page 5 of 12 2018 WL 1479027 Real Estate Alliance Ltd., 2018 WL 656377 (Fed. *5 At step one, "the claims are considered in their Cir. Feb. 1, 2018) (affirming grant of summary entirety to ascertain whether their character as a whole judgment finding patent invalid for claiming ineligible is directed to excluded subject matter." Internet Patents subject matter); Core Wireless Licensing S.A.R.L. Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. v. LG Electronics, Inc., 880 F.3d 1356 (Fed. Cir. Cir. 2015) (emphasis added); see also Affinity Labs of 2018) (affirming denial of summary judgment that Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257 claims are directed to patent ineligible subject matter); (Fed. Cir. 2016) ("Affinity Labs I") (stating first step "calls Finjan, Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299 upon us to look at the 'focus of the claimed advance over (Fed. Cir. 2018) (affirming district court's conclusion following bench trial that patent claims were directed the prior art' to determine if the claim's 'character as a to patent-eligible subject matter). Even though the whole' is directed to excluded subject matter"). parties have not provided their specific analyses of all of these recent decisions, the Court has considered In conducting the step one analysis, courts should not each of them in reaching its decision here. Notably, "oversimplif[y]" key inventive concepts or "downplay" Judge Burke did not have the benefit of many of these an invention's benefits. Enfish, LLC v. Microsoft Corp., decisions, as they were issued well after he completed 822 F.3d 1327, 1337–38 (Fed. Cir. 2016); see also McRO, his November 2017 Report. Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, Under 35 U.S.C. § 101, "[w]hoever invents or 1313 (Fed. Cir. 2016) ("[C]ourts 'must be careful to avoid discovers any new and useful process, machine, oversimplifying the claims' by looking at them generally manufacture, or composition of matter, or any new and failing to account for the specific requirements of the and useful improvement thereof, may obtain a patent claims.") (quoting In re TLI Commc'ns LLC Patent Litig., therefor, subject to the conditions and requirements 823 F.3d 607, 611 (Fed. Cir. 2016)). of this title." There are three exceptions to § 101's broad patent-eligibility principles: "laws of nature, At step two, courts must "look to both the claim as a physical phenomena, and abstract ideas." Diamond v. whole and the individual claim elements to determine Chakrabarty, 447 U.S. 303, 309 (1980). "Whether a claim whether the claims contain an element or combination recites patent eligible subject matter is a question of of elements that is sufficient to ensure that the patent law which may contain disputes over underlying facts." in practice amounts to significantly more than a patent Berkheimer v. HP Inc., 881 F.3d 1360, 1368 (Fed. Cir. upon the ineligible concept itself." McRo, 837 F.3d at 2018). 1312 (internal brackets and quotation marks omitted). The "standard" step two inquiry includes consideration of In Mayo Collaborative Services v. Prometheus whether claim elements "simply recite 'well-understood, Laboratories, Inc., 132 S. Ct. 1289 (2012), the Supreme routine, conventional activit[ies].' " Bascom Glob. Internet Court set out a two-step "framework for distinguishing Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 patents that claim laws of nature, natural phenomena, (Fed. Cir. 2016) (quoting Alice, 134 S. Ct. at 2359). and abstract ideas from those that claim patent-eligible "Simply appending conventional steps, specified at a high applications of those concepts." Alice Corp. Pty. Ltd. v. level of generality, [is] not enough to supply an inventive CLS Bank Int'l, 134 S. Ct. 2347, 2355 (2014). First, courts concept." Alice, 134 S. Ct. at 2357 (internal quotation must determine if the claims at issue are directed to a marks omitted; emphasis in original). patent-ineligible concept ("step one"). See id. If so, the next step is to look for an " 'inventive concept'—i.e., an However, "[t]he inventive concept inquiry requires more element or combination of elements that is sufficient to than recognizing that each claim element, by itself, was ensure that the patent in practice amounts to significantly known in the art." Bascom, 827 F.3d at 1350. In Bascom, more than a patent upon the [ineligible concept] itself the Federal Circuit held that "the limitations of the claims, ("step two"). Id. The two steps are "plainly related" taken individually, recite generic computer, network and "involve overlapping scrutiny of the content of the and Internet components, none of which is inventive claims." Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d by itself,'* but nonetheless determined that an ordered 1350, 1353 (Fed. Cir. 2016). combination of these limitations was patent-eligible under step two. Id. at 1349. © 2018 Thomson Reuters. No claim to original U.S. Government Works. 4 Case TriPlay, Inc. 6:18-cv-00080-ADA-JCM v. WhatsApp Inc., Slip Copy (2018) Document 34-4 Filed 11/08/18 Page 6 of 12 2018 WL 1479027 The Federal Circuit recently elaborated on the step two standard, stating that "[t]he question of whether a claim At both steps one and two, it is often useful for the element or combination of elements is well-understood, Court to compare the claims at issue with claims that routine and conventional to a skilled artisan in the have been considered in the now considerably large body relevant field is a question of fact. Any fact, such as this of decisions applying § 101. See Amdocs (Israel) Ltd. one, that is pertinent to the invalidity conclusion must be v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. proven by clear and convincing evidence." Berkheimer, 2016). 881 F.3d at 1368; see also Aatrix, 882 F.3d at 1128 ("While the ultimate determination of eligibility under § 101 is Finally, as a procedural matter, the Federal Circuit a question of law, like many legal questions, there can has observed frequently that § 101 disputes may be be subsidiary fact questions which must be resolved en amenable to resolution on motions for judgment on the route to the ultimate legal determination."); Automated pleadings, motions to dismiss, or summary judgment. See, Tracking, 2018 WL 935455, at *5 ("We have held that e.g., Berkheimer, 881 F.3d at 1368 ("Whether a claim 'whether a claim element or combination of elements is recites patent eligible subject matter is a question of law well-understood, routine and conventional to a skilled which may contain disputes over underlying facts. Patent artisan in the relevant field is a question of fact.'") eligibility has in many cases been resolved on motions (quoting Berkheimer, 881 F.3d at 1368). to dismiss or summary judgment. Nothing in this decision should be viewed as casting doubt on the propriety of *6 "Whether a particular technology is well-understood, those cases. When there is no genuine issue of material routine, and conventional goes beyond what was simply fact regarding whether the claim element or claimed known in the prior art. The mere fact that something is combination is well-understood, routine, conventional to disclosed in a piece of prior art, for example, does not a skilled artisan in the relevant field, this issue can be mean it was well-understood, routine, and conventional." decided on summary judgment as a matter of law.") Berkheimer, 881 F.3d at 1369; see also Exergen, 2018 (emphasis added); buySAFE, Inc. v. Google, Inc., 765 WL 1193529, at *4 ("Something is not well-understood, F.3d 1350, 1351–52 (Fed. Cir. 2014) (affirming grant of routine, and conventional merely because it is disclosed in Rule 12(c) motion for judgment on pleadings for lack of a prior art reference. There are many obscure references patentable subject matter). that nonetheless qualify as prior art."). As part of the step two "inventive concept" inquiry, III. DISCUSSION the Federal Circuit has looked to the claims as well WhatsApp contends that the representative claims are as the specification. See Affinity Labs of Texas, LLC ineligible under § 101 because under Alice step one, v. Amazon.com Inc., 838 F.3d 1266, 1271 (Fed. Cir. they are directed to the abstract idea of converting and 2016) ("Affinity Labs II") ("[N]either the claim nor the forwarding messages, and under step two, even when specification reveals any concrete way of employing a considered as an ordered combination, they do not customized user interface."). Still, it is not enough just contain any inventive concept but instead recite only well- to disclose the improvement in the specification; instead, understood, routine, and conventional elements. TriPlay the Court's task becomes to "analyze the asserted claims counters that its claims satisfy Alice step one because they and determine whether they capture these improvements." are directed toward improving a technological process (see Berkheimer, 881 F.3d at 1369 (emphasis added). In other D.I. 122 at 17, 19; Report at 30), and satisfy step 2 because words, "[t]o save a patent at step two, an inventive concept —even if the claims are found to be directed toward must be evident in the claims." RecogniCorp, LLC v. conventional elements—the ordered combination of the Nintendo Co., Ltd., 855 F.3d 1322, 1327 (Fed. Cir. 2017) claimed elements is patent eligible (see D.I. 122 at 19; see (emphasis added); see also Alice, 134 S. Ct. at 2357 ("[W]e also Report at 21 ("It is clear that Plaintiff's argument is must examine the elements of the claim to determine not that Plaintiff invented any of the particular claimed whether it contains an 'inventive concept.'") (emphasis components of the 'access block' or 'media block.""); id. added); Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d at 34 ("Plaintiff is not contending that it invented the idea 1138, 1149 (Fed. Cir. 2016) ("The § 101 inquiry must focus of a template. Nor is it contending that it invented the on the language of the Asserted Claims themselves."). concept of a template with a unique identifier.")) © 2018 Thomson Reuters. No claim to original U.S. Government Works. 5 Case TriPlay, Inc. 6:18-cv-00080-ADA-JCM v. WhatsApp Inc., Slip Copy (2018) Document 34-4 Filed 11/08/18 Page 7 of 12 2018 WL 1479027 *7 As part of the previous Order, the Court determined representative claims (claim 8 of the '475 patent and with respect to step one that claim 12 of the '475 patent claims 9 and 15 of the '677 patent) includes both the was directed to the abstract idea of "converting and access block/media block and an additional feature. forwarding messages, so that the messages are sent in (Id.) As each remaining claim contains the feature disclosed in claim 1—the access/media block—and it a format and layout in which they can be received by was addressed in the parties' briefs and the Report, a recipient." (D.I. 72 at 2–3; see also D.I. 52 at 25–26) the Court will analyze it. The Court reached the same conclusion with respect to The Court construed "access block" as "a step one and claim 1 of the '475 patent, which is one computer comprising a user's gateway that supports of the representative claims that is the subject of this communications with communication devices and a Opinion. In the Report now under review, Judge Burke traffic manager that is operably connected to the reiterated and adhered to the step one analysis the Court user's gateway and manages the message delivery had previously endorsed. (See Report at 16) Hence, in within the messaging system." (D.I. 108 at 20; D.I. recommending denying WhatsApp's instant motion to 118 at 2) The Court construed "media block" as dismiss, the Report found that WhatsApp had not met its "a computer comprising a message manager and burden at Alice step two. a transcoder operatively connected to the message manager, the transcoder being configured to convert In particular, the Report focused on three features of the the message format of media items." (D.I. 108 at 26; D.I. 118 at 2) representative claims that may confer patent eligibility under step two: (1) the "access block/media block messaging system solution" recited in all representative 1. Step one claims; (2) the "message template solution" recited in claim 8 of the '475 patent and claim 9 of the '677 patent; Triplay makes no argument that the claim construction and (3) the "video delivery/clickable icon solution" recited the Court undertook subsequent to the prior Report in claims 9 and 15 of the '677 patent. (Id. at 11–14) and Recommendation, or anything else in the record, With regard to each feature, the Report recommended necessitates a reevaluation of the Court's earlier step denying WhatsApp's motion due to the presence of one conclusion. Therefore, for the reasons stated in underlying factual questions that prohibited a finding of the Court's prior Order (D.I. 72) and Report and ineligibility on the current record. (Id. at 25–26, 35, 43) Recommendation (D.I. 52), which are incorporated herein Specifically, the Report found fact issues as to (1) whether by reference, the Court concludes (again) that WhatsApp the claims solve the problem of cross-platform messaging has met its burden at step one. in a sufficiently particular, non-routine, unconventional way, and (2) whether allowing the claims would "preempt the 'building blocks' of research in the cross-platform 2. Step two messaging field and 'risk disproportionately tying up the use of the underlying ideas.' " (Id.) In his Report, Judge Burke agreed with WhatsApp that "each of the components of these blocks [i.e., the The Court now turns to applying steps one and two to access and media blocks], in and of themselves, are each of the four representative claims. functional and conventional." (Report at 21) (internal quotation marks omitted) However, in considering the ordered combination of those elements, the Report A. Claim 1 of the '475 patent found that "there is a fact issue as to whether the Claim 1 of the '475 patent contains a limitation claiming claim (with its 'access block' and 'media block' elements the access block/media block feature. 2 and their respective operative algorithms that work together to take in, convert, and send out information) 2 At the February 2018 argument, TriPlay stated that solves the problem of cross-platform messaging in a it is no longer asserting claims 2–5 of the '475 sufficiently particular, non-routine, unconventional way," patent, and, thus, none of the asserted claims has and "whether allowing representative claim 1 would just the access block/media block features of claim preempt the 'building blocks' of research in the cross- 1. (See Tr. at 40–41) Instead, each of the remaining platform messaging field and 'risk disproportionately © 2018 Thomson Reuters. No claim to original U.S. Government Works. 6 Case TriPlay, Inc. 6:18-cv-00080-ADA-JCM v. WhatsApp Inc., Slip Copy (2018) Document 34-4 Filed 11/08/18 Page 8 of 12 2018 WL 1479027 tying up the use of the underlying ideas.' " (Id. at 25– ("The specification explains that the claimed improvement 26) WhatsApp objects to this analysis, contending that increases efficiency and computer functionality over the the "specification makes clear that the problem of—and prior art systems .... The specification describes an the solutions to—cross-platform messaging was known in inventive feature that stores parsed data in a purportedly the prior art" and "neither the patent's specification nor unconventional manner."). TriPlay in its pleadings demonstrated or articulated how the use of the block components provided an inventive Moreover, contrary to Aatrix, this gap in the specification improvement over the prior art." (Objs at 3–4) (internal is not filled by TriPlay's pleadings. See Aatrix, 882 F.3d quotation marks omitted) at 1128 ("There are concrete allegations in the second amended complaint that individual elements and the *8 As the Report correctly explained, "the specification claimed combination are not well-understood, routine, or describes the claimed invention. But it never really conventional activity. There are also concrete allegations seems to clearly articulate—at least with respect to regarding the claimed combination's improvement to the 'access block' and 'media block' components of the functioning of the computer."). Instead, the only the invention—what problems remained unsolved as to allegation in TriPlay's TAC even slightly related to those prior art systems, and/or how the use of these an inventive concept broadly asserts that "TriPlay components as a part of a messaging system provided initiated its efforts to create a web-based content delivery an improvement over the prior art." (Report at 23) The platform to deliver content between devices of different specification repeatedly explains that the components manufacturers irrespective of certain capability, format being used are general purpose computers, processes, and and layout differences that may exist between the devices. See e.g., '475 patent at 9:67–10:2 (disclosing that sending and receiving devices." (TAC ¶ 9) The TAC and embodiments of invention "may be specially constructed specification are silent as to any problems that were still for the desired 20 purposes, or it may comprise a general being encountered by the "various systems" that "were purpose computer"); id. at 10:14–19 ("The processes/ developed to provide a solution." ('475 Patent at 1:20–22; devices presented herein are not inherently related to see also Report at 23) Nor do the specification or TAC any particular electronic component or other apparatus, disclose any specific improvement the patentees invented. unless specifically stated otherwise. Various general Accordingly, claim 1 is invalid as directed to ineligible purpose components may be used in accordance with the subject matter. 3 teachings herein ...."); id. at 10:21–23 ("[E]mbodiments of the present invention are not described with reference to 3 The Report reasons that the Examiner granted the any particular programming language."); id. at 11:57–61 '475 patent over Ye et al. (a prior art reference ("[T]he invention is not bound by the specific network which "sounds somewhat similar to what claim 1's architecture ... Those versed in the art will readily system does"), and therefore, fact questions may appreciate that the invention is, likewise, applicable to exist as to claim 1's eligibility. (Report at 25–26) any network architecture facilitating messaging between The Court disagrees. "[E]ligibility and novelty are communication devices."). separate inquiries," and, therefore, material relevant to novelty and obviousness may not always be In light of the Federal Circuit's recent guidance on the step relevant to whether the claims were directed to eligible two inquiry, post-dating the issuance of the Report, it is subject matter. Two–Way Media Ltd. v. Comcast clear to the Court that these portions of the specification Cable Comme'ns, LLC, 874 F.3d 1329, 1339–40 (Fed. strongly support WhatsApp's contention that the claims Cir. 2017). This is especially true here, where the specification, claims, and complaint are so lacking. fail at step two. See, e.g., Berkheimer, 881 F.3d at Given the substantial failings of this intrinsic 1368; Aatrix, 882 F.3d at 1128; Automated Tracking evidence, it would be futile to provide TriPlay an Sols., 2018 WL 935455, at *5. Unlike, for instance, the opportunity yet again to amend its complaint. As claims involved in Berheimer, the specification here is further described below, each of the representative silent as to what the specific claimed improvement is, claims lacks an inventive concept at step two. Given how it differs from the prior art, or how any inventive the intrinsic evidence (which cannot change), TriPlay feature, alone or as an ordered combination, is used in an cannot state a plausible claim for infringement of unconventional manner. See Berkheimer, 881 F.3d at 1369 a valid patent, meaning yet another amendment © 2018 Thomson Reuters. No claim to original U.S. Government Works. 7 Case TriPlay, Inc. 6:18-cv-00080-ADA-JCM v. WhatsApp Inc., Slip Copy (2018) Document 34-4 Filed 11/08/18 Page 9 of 12 2018 WL 1479027 of the complaint would be futile. See Automated Tracking, 2018 WL 935455, at *5 ("Our analysis of the representative claims here uncovers no inventive concept in the individual claim limitations or their 1. Step one ordered combination ... The complaint at issue The Report did not make a decision as to whether has no allegations, which when accepted as true, would even create a factual issue, and [the patent] WhatsApp had met its burden at step one, finding the issue specification indicates that the components of the to present a "close call[ ]." (Report at 32–33) claimed invention are conventional."); In re TLI Commc'ns, 823 F.3d at 614 ("[H]ere we need to The appropriate inquiry under step one here is whether only look to the specification which describes the the focus of the claims "is on the specific asserted [components] performing basic computer functions ... improvement in computer capabilities ... or, instead, on or performing functions known in the art.") a process that qualifies as an 'abstract idea' for which (internal quotation marks omitted); Tr. at 13–14, computers are invoked merely as a tool." Enfish, 822 26–27. It would be implausible, for instance, for F.3d at 1335–36. The Court agrees with WhatsApp that TriPlay to allege in a fourth amended complaint claim 8 is directed to the same abstract idea as claim that the components of the claims are novel, 1—"converting and forwarding messages, so that the when the specification repeatedly describes them as messages are sent in a format and layout in which they conventional. can be received by a recipient"—rather than, as TriPlay These same failings also mean that waiting until summary judgment to assess the patentability of the contends, improving a technological process via the use of claims at issue here is unnecessary, as the Court templates. (See Objs at 5; Resp at 6 & n.1) would not then be permitted to rely on extrinsic evidence to contradict the indisputable statements Contrary to Enfish, the claims and specification here of the specification. See Berkheimer, 881 F.3d at broadly cover the use of templates in a messaging system 1368 ("As our cases demonstrate, not every § 101 and "provide[ ] little specificity about exactly how it is that determination contains genuine disputes over the the message template element improved upon a problem underlying facts material to the § 101 inquiry."). in the prior art." (Report at 33; see also '475 patent at *9 As the access block/media block does not provide 11:8–11 ("The term 'message template' used in this patent the necessary inventive concept at step two, for any of specification should be expansively construed to include the other representative claims to survive WhatsApp's any kind of predefined user interface related to content motion, the Court will have to find some other limitation and/or layout of transmitted and/or received message.")) of the claims—or the ordered combination of all While the specification asserts that the message template the claim's elements—provides the necessary inventive element is a "novel solution,'* it nowhere explains what concept. 4 that solution is. See '475 patent at 20:35–40. Further, while the patent asserts that "[a]mong advantages of 4 certain aspects of the present invention is reduction in As WhatsApp has met its burden at both steps one need of content analysis and ability to provide layout- and two, it follows that the challenged claim is also related delivery instructions based on predefined rules unduly preemptive. See Two–Way Media, 874 F.3d and parameters," id. at 21:8–12, this efficiency is "the at 1339 ("[W]here a patent's clams are deemed only to disclose patent ineligible subject matter under the fundamental benefit of templates in any context" (D.I. Alice framework, ... preemption concerns are fully 124 at 7), and the specification is silent as to how those addressed and made moot."). advantages are specifically accomplished by the claimed invention. Claim 8 is "nothing significantly more than B. Claim 8 of the '475 patent an instruction to apply the abstract idea" via the use Claim 8 of the '475 patent is directed to the "message of templates, without any "meaningful limitation beyond template solution." In template-based messaging, "the generally linking the use of the [system] to a particular media block is configured to convert the initial layout technological environment." Alice, 134 S. Ct. at 2360 of the message in accordance with the recognized unique (internal quotation marks omitted). Accordingly, claim 8 identifier [of the template] and the display capabilities of is directed to an abstract idea under step one. the receiver's device." (Report at 13) © 2018 Thomson Reuters. No claim to original U.S. Government Works. 8 Case TriPlay, Inc. 6:18-cv-00080-ADA-JCM v. WhatsApp Inc., Slip Copy (2018) Document 34-4 Filed 11/08/18 Page 10 of 12 2018 WL 1479027 successful downloading of the video would be hindered in some way (by, for example, bandwidth)." (Report at 14) 2. Step two *10 The Report stated that it could not conclude "as a matter of law at the pleading stage, that representative 1. Step one claim 8 does not pass muster under step two of Alice." (Report at 34) Specifically, the Report identified The Report finds the eligibility of claim 15 "better preemption questions and noted the template's "unique assessed at step two" because "there is evidence on identifier," as described in the patent, before finding it both sides as to whether the claim is 'directed to' [the plausible that it is "a bit more of a particular solution video delivery/clickable icon element]." (Report at 40–41) to the problem of cross-platform messaging." (Id. at 35) TriPlay contends claim 15 is directed to an improvement WhatsApp objects that the Report finds fact questions to a technological process and, thus, is eligible under where none exist. (Objs at 6) The Court again agrees with step one. (Resp. at 9) WhatsApp contends claim 15 is WhatsApp. directed to the same abstract idea as claim 1 (converting and forwarding messages). (Objs. at 7) The Court agrees Neither the claims nor the specification explain what with WhatsApp. is inventive about the templates or the identifier, alone or in combination with other steps of the claims. As As the Report found, "the claim could be viewed WhatsApp contends, "a template can just be a predefined as broadly covering the concept of converting and layout—a well-understood concept that adds nothing forwarding messages, via the use of an access block and meaningful." (D.I. 121 at 19) TriPlay points to nothing media block." (Report at 41) While the Report concludes in the patent to counter this notion. As the Report that eligibility under step one is a "close call" due to found, "the specification does not robustly describe how the claim including "prominent limitations relating to the invention's use of templates assist[s] in the message the 'clickable icon' " (id.), the Report also recognizes conversion process, or how it improves over prior art that "the written description does not put the video systems." (Report at 35) Accordingly, the Court concludes delivery/clickable icon element front and center" and that WhatsApp has met its burden at step two and claim "the term 'video' is only used in the patent specification 8 is not directed to patent eligible subject matter. 5 a handful of times, and then only in general terms (instead of in a discussion regarding the specific claimed 5 solution)." (Id.) Moreover, "while the specification does TriPlay contends that during IPR proceedings summarize another prior art system ... directed to WhatsApp failed to cite prior art of messaging 'converting a format of a multimedia message and systems incorporating templates to identify the content structure of messages. (See, e.g., Tr. at 53) transmitting a uniform resource locator and an access Even assuming TriPlay is correct, this does not code of the converted multimedia message,' it never defeat WhatsApp's showing at step two. See generally explains how the '677 patent attacks a challenge inherent Intellectual Ventures I LLC v. Symantec Corp., 838 in [the prior art]." (Id.) (internal citations omitted) Similar F.3d 1307, 1315 (Fed. Cir. 2016) ("[T]he 'novelty' to the claims at issue in Two–Way Media, claim 15 requires of any element or steps in a process, or even of functional results (e.g., "convert the initial message" and the process itself, is of no relevance in determining "adapt" the clickable icon), "but does not sufficiently whether the subject matter of a claim falls within describe how to achieve these results in a non-abstract the § 101 categories of possibly patentable subject way." Two–Way Media, 874 F.3d at 1337. Accordingly, matter.") (quoting Diamond v. Diehr, 450 U.S. 175, the Court finds claim 15 directed to the abstract idea of 188–89(1981)). converting and forwarding messages. C. Claim 15 of the '677 patent Claim 15 of the '677 patent recites the "video delivery/ clickable icon solution," i.e., replacing a video (or other 2. Step two media item) with a corresponding link "when a message *11 Under step two, the Report finds that the record— contains a media item such as a video, and delivery or including a prior IPR proceeding, the patent specification, © 2018 Thomson Reuters. No claim to original U.S. Government Works. 9 Case TriPlay, Inc. 6:18-cv-00080-ADA-JCM v. WhatsApp Inc., Slip Copy (2018) Document 34-4 Filed 11/08/18 Page 11 of 12 2018 WL 1479027 and the prosecution history—does not permit a finding limited by the fact that device manufacturers had different that claim 15 is patent-ineligible. (Report at 42–43) capabilities, formats and layouts to handle message WhatsApp objects, contending that "claim 15 adds content (i.e., text, music, video, pictures, etc.)." (TAC nothing inventive," since "[c]onverting, forwarding, and ¶ 8; see also Automated Tracking, 2018 WL 935455, at displaying video are routine computer functions," as is *5 ("The complaint at issue has no allegations, which "the use of links to retrieve content." (Objs. at 7–8) The when accepted as true, would even create a factual issue, Court agrees with WhatsApp. and [the] specification indicates that the components of the claimed invention are conventional.")) Absent from The Report finds fact issues as to "(1) whether the claim the claims, specification, and the pleadings is any insight solves a problem of cross-platform messaging (involving into how the claimed video delivery/clickable icon feature transmission of a video) in a sufficiently particular non- is achieved. See Elec. Power, 830 F.3d at 1355 (finding routine, unconventional way, and (2) whether allowing limitations with broad functional language that did not representative claim 15 would significantly preempt this explain "how the desired result is achieved" insufficient at field." (Report at 43) In the Court's view, however, there step two). is not enough in the record to render TriPlay's position on these points plausible to make these disputes the type Accordingly, the Court finds claim 15 invalid under § that preclude WhatsApp from meeting its burden at this 101. 6 stage of the case. The claims, specification, and TAC are silent as to how the proposed inventive concept is 6 While the Report looks to the IPR proceedings and implemented. See RecogniCorp, LLC v. Nintendo Co., 855 the fact that claim 15 was granted over the prior F.3d 1322, 1327 (Fed. Cir. 2017) ("To save a patent at step art (see Report at 42–43), the Court does not view two, an inventive concept must be evident in the claims.") these as a basis to alter its conclusion as to the (emphasis added). patent eligibility of the claim. See Two–Way Media, 874 F.3d at 1339–40 ("Eligibility and novelty are TriPlay had candidly acknowledged that all of the separate inquiries."); Symantec, 838 F.3d at 1315 components of its invention are conventional, routine, ("[T]he novelty of any element or steps in a process, and well-understood. (See, e.g., Tr. at 42, 58) Accordingly, or even of the process itself, is of no relevance in to succeed under step two, the ordered combination determining whether the subject matter of a claim of these components must recite an inventive concept. falls within the § 101 categories of possibly patentable WhatsApp has persuaded the Court that claim 15 (like subject matter.") (internal quotation marks omitted). the other claims considered in this Opinion) fails to do so. As addressed above in connection with step one, claim D. Claim 9 of the '677 patent 15 fails to describe how the combination of functional *12 Claim 9 of the '677 patent recites all of the above results it requires (e.g., "convert the initial message" and features—access block/media block element, message "adapt" the clickable icon) are actually achieved. This template element, and video delivery/clickable icon gap in the claims is not filled by the specification, which element. acknowledges that clickable icons were disclosed in the prior art. See '677 patent at 4:9–16 (discussing prior art reference (Kim) which "discloses a system and method 1. Step one for making a multimedia message service compatible with a non-supported multimedia message terminal" Triplay makes no unique argument that the Court has not through use of access code and resource locator). Beyond already considered in connection with reviewing the other summarizing Kim, "the specification merely makes one or claims, as to why the Court should find claim 9 of the '677 two passing references to the general concept of a media patent to survive step one. WhatsApp has met its burden item in a message being replaced by a link." (Report at 41) at step one. Moreover, the TAC says nothing specifically related to the video limitation beyond the broad claim that "TriPlay 2. Step two recognized in November 2004 that user devices were © 2018 Thomson Reuters. No claim to original U.S. Government Works. 10 Case TriPlay, Inc. 6:18-cv-00080-ADA-JCM v. WhatsApp Inc., Slip Copy (2018) Document 34-4 Filed 11/08/18 Page 12 of 12 2018 WL 1479027 WhatsApp has further met its burden at step two. Claim For the reasons stated in the Memorandum Order issued this same date, 9 is not directed to patentable subject matter because claim 9 merely combines claim elements already analyzed IT IS HEREBY ORDERED that: in connection with the other representative claims, all of which were found to lack an inventive concept. There is no 1. WhatsApp's objections (D.I. 147) to the Report and basis to find that the ordered combination of these various Recommendation (D.I. 145) are ADOPTED and the non-inventive concepts is itself, somehow, an inventive Report and Recommendation is REJECTED. concept. 2. WhatsApp's motion to dismiss (D.I. 120) is IV. CONCLUSION GRANTED. For the reasons stated above, the Court will grant WhatsApp's motion to dismiss. An order follows. 3. The parties shall meet and confer and, no later than March 29, 2018, submit a joint status report providing the Court with their position(s) as to how this case should now proceed. ORDER At Wilmington this 27th day of March, 2018: All Citations Slip Copy, 2018 WL 1479027 End of Document © 2018 Thomson Reuters. No claim to original U.S. Government Works. © 2018 Thomson Reuters. No claim to original U.S. Government Works. 11